35 U.S.C. § 316 — Conduct of inter partes review

Page 128 TITLE 35—PATENTS § 316 (C) the petitioner or real party in interest moves the court to dismiss the civil action. (3) TREATMENT OF COUNTERCLAIM.—A coun- terclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition re- questing the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a re- quest for joinder under subsection (c). (c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a pe- tition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. (d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, dur- ing the pendency of an inter partes review, if an- other proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, includ- ing providing for stay, transfer, consolidation, or termination of any such matter or pro- ceeding. (e) ESTOPPEL.— (1) PROCEEDINGS BEFORE THE OFFICE.—The pe- titioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the peti- tioner, may not request or maintain a pro- ceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in an inter partes review of a claim in a patent under this chapter that re- sults in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under sec- tion 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the peti- tioner raised or reasonably could have raised during that inter partes review. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–569; amended Pub. L. 107–273, div. C, title III, §§ 13106(a), 13202(a)(4), (c)(1), Nov. 2, 2002, 116 Stat. 1900–1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 300.) Editorial Notes REFERENCES IN TEXT Section 337 of the Tariff Act of 1930, referred to in subsec. (e)(2), is classified to section 1337 of Title 19, Customs Duties. AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to appeals. 2002—Pub. L. 107–273, § 13202(c)(1), made technical cor- rection to directory language of Pub. L. 106–113, which enacted this section. Subsec. (b). Pub. L. 107–273, § 13106(a), reenacted head- ing without change and amended text generally. Prior to amendment, text read as follows: ‘‘A third-party re- quester may— ‘‘(1) appeal under the provisions of section 134 with respect to any final decision favorable to the patent- ability of any original or proposed amended or new claim of the patent; or ‘‘(2) be a party to any appeal taken by the patent owner under the provisions of section 134, subject to subsection (c).’’ Subsec. (c). Pub. L. 107–273, § 13202(a)(4), struck out ‘‘United States Code,’’ after ‘‘title 28,’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated im- plementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. EFFECTIVE DATE OF 2002 AMENDMENT Amendment by section 13106(a) of Pub. L. 107–273 ap- plicable with respect to any reexamination proceeding commenced on or after Nov. 2, 2002, see section 13106(d) of Pub. L. 107–273, set out as a note under section 134 of this title. EFFECTIVE DATE Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under sec- tion 41 of this title. ESTOPPEL EFFECT OF REEXAMINATION Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle F, § 4607], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, provided for estoppel from challenging certain facts determined during inter partes reexamination under former section 311 of this title and contained a severability provision. § 316. Conduct of inter partes review (a) REGULATIONS.—The Director shall prescribe regulations— (1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or docu- ment filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; (2) setting forth the standards for the show- ing of sufficient grounds to institute a review under section 314(a); (3) establishing procedures for the submis- sion of supplemental information after the pe- tition is filed; (4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title; (5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to— Page 129 TITLE 35—PATENTS § 317 (A) the deposition of witnesses submitting affidavits or declarations; and (B) what is otherwise necessary in the in- terest of justice; (6) prescribing sanctions for abuse of dis- covery, abuse of process, or any other im- proper use of the proceeding, such as to harass or to cause unnecessary delay or an unneces- sary increase in the cost of the proceeding; (7) providing for protective orders governing the exchange and submission of confidential information; (8) providing for the filing by the patent owner of a response to the petition under sec- tion 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affida- vits or declarations, any additional factual evidence and expert opinions on which the pat- ent owner relies in support of the response; (9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to can- cel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent; (10) providing either party with the right to an oral hearing as part of the proceeding; (11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director no- tices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c); (12) setting a time period for requesting join- der under section 315(c); and (13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director. (b) CONSIDERATIONS.—In prescribing regula- tions under this section, the Director shall con- sider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete pro- ceedings instituted under this chapter. (c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board shall, in accord- ance with section 6, conduct each inter partes review instituted under this chapter. (d) AMENDMENT OF THE PATENT.— (1) IN GENERAL.—During an inter partes re- view instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims. (2) ADDITIONAL MOTIONS.—Additional mo- tions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director. (3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new mat- ter. (e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponder- ance of the evidence. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–569; amended Pub. L. 107–273, div. C, title III, § 13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 302.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to certificate of patent- ability, unpatentability, and claim cancellation. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113, which enacted this section. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated im- plementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. EFFECTIVE DATE Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under sec- tion 41 of this title. § 317. Settlement (a) IN GENERAL.—An inter partes review insti- tuted under this chapter shall be terminated with respect to any petitioner upon the joint re- quest of the petitioner and the patent owner, un- less the Office has decided the merits of the pro- ceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that peti- tioner’s institution of that inter partes review. If no petitioner remains in the inter partes re- view, the Office may terminate the review or proceed to a final written decision under section 318(a). (b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agree- ments referred to in such agreement or under- standing, made in connection with, or in con- templation of, the termination of an inter partes review under this section shall be in writ- ing and a true copy of such agreement or under- standing shall be filed in the Office before the termination of the inter partes review as be- tween the parties. At the request of a party to the proceeding, the agreement or understanding